Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Status of the Claims
The following office action in response to the RCE filed on 3/10/2026.
Claims 1, 3-8, 10-15 and 17-20 are currently amended.
Claims 21-23 are newly added.
Claims 2, 9 and 16 were previously cancelled.
Therefore, claims 1, 3-8, 10-15 and 17-23 are pending and addressed below.
A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application AFTER FINAL rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the FINALITY of the previous Office Action has been WITHDRAWN pursuant to 37 CFR 1.114. Applicant's submission filed on 3/10/2026 has been entered.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-8, 10-15 and 17-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1, 3-8, 10-15 and 17-23 are directed to a system, a method, which is a process, machine, manufacturer or composition of matter and thus statutory category of invention (Step 1: YES).
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. The claim recites the limitations of “…a merchant located in a transaction origination country associated with a first set of localization requirements for a transaction processing process and a data storage process; an issuer of the payment card located in a transaction destination country associated with a second set of localization requirements for the transaction processing process and the data storage process; perform the transaction processing for the international financial transaction involving the payment card; perform the data storage process for the international financial transaction involving the payment card, wherein the transaction processing and data storage are located in one or more intermediate countries; and identify an optimum pathway with regard to one or more relevant factors including the financial cost and the performance cost of the international financial transaction involving the payment card, including: identify the transaction origination country and the transaction destination country for the international financial transaction involving the payment card, assign the transaction origination country to a first country category based on the first set of localization requirements for the transaction processing process and the data storage process, assign the transaction destination country to a second country category based on the second set of localization requirements for the transaction processing process and the data storage process, identify a first transaction processing and data storage pathway between the transaction origination country and the transaction destination country based on the first country category and the second country category, evaluate the first transaction processing and data storage pathway based on the one or more relevant factors including the financial cost and the performance cost, determine a first prioritization score based on the one or more relevant factors including the financial cost and the performance cost for the first transaction processing and data storage pathway; identify one or more alternative transaction processing and data storage pathways between the transaction origination country and the transaction destination country through the one or more intermediate countries, evaluate the one or more alternative transaction processing and data storage pathways based on the one or more relevant factors including the financial cost and the performance cost, determine an alternative prioritization score based on the one or more relevant factors including the financial cost and the performance cost for each of the one or more alternative transaction processing and data storage pathways, compare the first prioritization score for the first transaction processing and data storage pathway and the alternative prioritization score for each of the one or more alternative transaction processing and data storage pathways, and select the optimum pathway for the transaction processing process and the data storage process based on comparing the prioritization scores”. These recited limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of commercial or legal interactions (including business relations, i.e. facilitating the internation financial transaction involving the payment card using the optimum pathway) but for the recitation of generic computer component. If a claim limitation, under its broadest reasonable interpretation, covers concepts of covers performance of commercial or legal interactions but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The additional limitations (besides those that recite the abstract idea) include the presence in the claimed computer system of one or more transaction processing computer infrastructures, one or more data storage computer infrastructures, a computer server and an optimum pathway identification module that are all recited at a high level of generality to perform the functions of “…perform… the transaction processing; perform …the data storage process; identify… an optimum pathway with regard to one or more relevant factors including: identify …the transaction origination country and the transaction destination country, assign… the transaction origination country to a first country category, assign… the transaction destination country to a second country category, identify …a first transaction processing and data storage pathway, evaluate …the first transaction processing and data storage pathway…, determine …a first prioritization score; identify… one or more alternative transaction processing and data storage pathways…, evaluate… the one or more alternative transaction processing and data storage pathways…, determine …an alternative prioritization score…, compare… the first prioritization score…, and select …the optimum pathway for the transaction processing process and the data storage process”, such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a particular application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception or amount to an inventive concept. As discussed above with respect to integration of the abstract idea into a practical application, the additional limitations of the one or more transaction processing computer infrastructures, the one or more data storage computer infrastructures, the computer server and the optimum pathway identification module that are all recited at a high level of generality to perform the functions of “…perform… the transaction processing; perform …the data storage process; identify… an optimum pathway with regard to one or more relevant factors including: identify …the transaction origination country and the transaction destination country, assign… the transaction origination country to a first country category, assign… the transaction destination country to a second country category, identify …a first transaction processing and data storage pathway, evaluate …the first transaction processing and data storage pathway…, determine …a first prioritization score; identify… one or more alternative transaction processing and data storage pathways…, evaluate… the one or more alternative transaction processing and data storage pathways…, determine …an alternative prioritization score…, compare… the first prioritization score…, and select …the optimum pathway for the transaction processing process and the data storage process”, above amounts to mere instructions to apply the exception using the generic computer component. When viewing the additional elements either individually or as an ordered combination, the claim as a whole does not amount to significantly more than the judicial exception because the claim does not include improvements to another technology or technical field, improvements to the function of the computer itself, and does not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. In effect, the additional limitations add the words “apply it” (or an equivalent) to the judicial exception, or mere instructions to implement an abstract idea on a computer. Mere instructions to apply an exception using the generic computer component cannot provide an inventive concept. Therefore, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. Thus, the claim is not patent eligible.
Independent claim 8 recite limitations substantially similar to claim 1. Thus, the claims are rejected based on the same reasoning as above in claim 1. Thus, the claims are not eligible.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. The claim recites the limitations of “…identifying an origination country and a destination country for the international financial transaction involving the payment card; assigning the origination country to a first transaction processing country category based on a first set of transaction processing localization requirements for a transaction processing process; assigning the destination country to a second transaction processing country category based on a second set of transaction processing localization requirements for the transaction processing process; identifying a first transaction processing pathway between the origination country and the destination country based on the first transaction processing country category and the second transaction processing country category; evaluating the first transaction processing pathway based on one or more relevant factors including the financial cost and the performance cost; determining a first transaction processing prioritization score based on the one or more relevant factors including the financial cost and the performance cost for the first transaction processing pathway; identifying one or more alternative transaction processing pathways between the origination country and the destination country through one or more intermediate countries; evaluating the one or more alternative transaction processing pathways based on the one or more relevant factors including the financial cost and the performance cost; determining an alternative transaction processing prioritization score based on the one or more relevant factors including the financial cost and the performance cost for each of the one or more alternative transaction processing pathways; comparing the first transaction processing prioritization score for the first transaction processing pathway and the alternative transaction processing prioritization score for each of the one or more alternative transaction processing pathways; selecting an optimum transaction processing pathway for the transaction processing process based on comparing the first transaction processing prioritization score and the alternative transaction processing prioritization score for each of the one or more alternative transaction processing pathways; and using the optimum transaction processing pathway for the transaction processing process; assigning the origination country to a first data storage country category based on a first set of data storage localization requirements for a data storage process; assigning the destination country to a second data storage country category based on a second set of data storage localization requirements for the data storage process; identifying a first data storage pathway between the origination country and the destination country based on the first data storage country category and the second data storage country category; evaluating the first data storage pathway based on one or more relevant factors including the financial cost and the performance cost; determining a first data storage prioritization score based on the one or more relevant factors including the financial cost and the performance cost for the first data storage pathway; identifying one or more alternative data storage pathways between the origination country and the destination country through one or more intermediate countries; evaluating the one or more alternative data storage pathways based on the one or more relevant factors including the financial cost and the performance cost; determining an alternative data storage prioritization score based on the one or more relevant factors including the financial cost and the performance cost for each of the one or more alternative data storage pathways; comparing the first data storage prioritization score for the first data storage pathway and the alternative prioritization score for each of the one or more alternative data storage pathways; selecting an optimum data storage pathway for the data storage process based on the comparison of the first data storage prioritization score and the alternative data storage prioritization score for each of the one or more alternative data storage pathways”. These recited limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of commercial or legal interactions (including business relations, i.e. facilitating the internation financial transaction involving the payment card using the optimum pathway) but for the recitation of generic computer component. If a claim limitation, under its broadest reasonable interpretation, covers concepts of covers performance of commercial or legal interactions but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The additional limitations (besides those that recite the abstract idea) include the presence in the claimed method of a computer server and an optimum pathway identification module that are all recited at a high level of generality to perform the functions of “…identifying …an origination country and a destination country; assigning… the origination country to a first transaction processing country category…; assigning… the destination country to a second transaction processing country category; identifying …a first transaction processing pathway; evaluating …the first transaction processing pathway based on one or more relevant factors; determining …a first transaction processing prioritization score based on the one or more relevant factors; identifying …one or more alternative transaction processing pathways; evaluating… the one or more alternative transaction processing pathways; determining …an alternative transaction processing prioritization score; comparing …the first and the alternative transaction processing prioritization scores; selecting… an optimum transaction processing pathway for the transaction processing process; using… the optimum transaction processing pathway for the transaction processing process; assigning… the origination country to a first data storage country category; assigning …the destination country to a second data storage country category; identifying …a first data storage pathway; evaluating …the first data storage pathway based on one or more relevant factors; determining … a first data storage prioritization score; identifying … one or more alternative data storage pathways; evaluating …the one or more alternative data storage pathways; determining …an alternative data storage prioritization score; comparing …the first and the alternative data storage prioritization scores; and selecting …an optimum data storage pathway for the data storage process”, such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a particular application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception or amount to an inventive concept. As discussed above with respect to integration of the abstract idea into a practical application, the additional limitations of the computer server and the optimum pathway identification module that are all recited at a high level of generality to perform the functions of “…identifying …an origination country and a destination country; assigning… the origination country to a first transaction processing country category…; assigning… the destination country to a second transaction processing country category; identifying …a first transaction processing pathway; evaluating …the first transaction processing pathway based on one or more relevant factors; determining …a first transaction processing prioritization score based on the one or more relevant factors; identifying …one or more alternative transaction processing pathways; evaluating… the one or more alternative transaction processing pathways; determining …an alternative transaction processing prioritization score; comparing …the first and the alternative transaction processing prioritization scores; selecting… an optimum transaction processing pathway for the transaction processing process; using… the optimum transaction processing pathway for the transaction processing process; assigning… the origination country to a first data storage country category; assigning …the destination country to a second data storage country category; identifying …a first data storage pathway; evaluating …the first data storage pathway based on one or more relevant factors; determining … a first data storage prioritization score; identifying … one or more alternative data storage pathways; evaluating …the one or more alternative data storage pathways; determining …an alternative data storage prioritization score; comparing …the first and the alternative data storage prioritization scores; and selecting …an optimum data storage pathway for the data storage process”, above amounts to mere instructions to apply the exception using the generic computer component. When viewing the additional elements either individually or as an ordered combination, the claim as a whole does not amount to significantly more than the judicial exception because the claim does not include improvements to another technology or technical field, improvements to the function of the computer itself, and does not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. In effect, the additional limitations add the words “apply it” (or an equivalent) to the judicial exception, or mere instructions to implement an abstract idea on a computer. Mere instructions to apply an exception using the generic computer component cannot provide an inventive concept. Therefore, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. Thus, the claim is not patent eligible.
Dependent claims 3-7, 10-14 and 17-23 are dependent on claims 1, 8 and 15. Therefore, claims 3-7, 10-14 and 17-23 are directed to the same abstract idea of claim 1, 8 and 15. Claims 3-7, 10-14 and 17-23 further recite the limitations that merely refer back to further details of the abstract idea. Claims 21-23 further recite the limitations that are adding more details of how to determine or calculate the prioritization scores. Accordingly, dependent claims 3-7, 10-14 and 17-23 do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. When viewing the additional elements either individually or as an ordered combination, the claims as a whole does not amount to significantly more than the judicial exception because the claim does not include improvements to another technology or technical field, improvements to the function of the computer itself, and does not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. In effect, the additional limitations add the words “apply it” (or an equivalent) to the judicial exception, or mere instructions to implement an abstract idea on a computer. Mere instructions to apply an exception using the generic computer component cannot provide an inventive concept. Therefore, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. Thus, when considering the combination of elements and the claimed as a whole, the dependent claims 3-7, 10-14 and 17-23 are not patent eligible.
Response to Arguments
Previous Claim Objection
The previous claim objection of claim 15 has been withdrawn in the light of the Applicant’s amendments.
Previous Claim rejections – 35 USC § 101
The updated rejections of claims 1, 3-8, 10-15 and 17-23 in view of Alice have been provided in the light of Applicant’s amendments.
Applicant's arguments filed 3/10/2026 have been fully considered but they are not persuasive.
Argument 1: Applicant argued that “…the present invention improves the functionality of a computer system in the performance of an international financial transaction by identifying and using a combined optimum transaction processing and data storage pathway (e.g., paras. [0027] and [0032]) or a separate optimum transaction processing pathway (e.g., para. [0038]) and a separate optimum data storage pathway (see, e.g., para. [0041]) that provide the optimum, or best available, financial cost and performance cost. In comparison, another computer system that uses a non-optimum pathway would provide relatively worse performance… In light of the foregoing, the Applicant respectfully requests that the rejections of claims 1, 3-8, 10-15, and 17-23, under 35 U.S.C. §101 be withdrawn…” (Please see the remarks on pages 13-14).
Answer 1: The Examiner respectfully disagrees.
As the office has explained above that the additional limitations of the claim of the one or more transaction processing computer infrastructures, the one or more data storage computer infrastructures, the computer server and the optimum pathway identification module that are all recited at a high level of generality to perform the functions of “…perform… the transaction processing; perform …the data storage process; identify… an optimum pathway with regard to one or more relevant factors including: identify …the transaction origination country and the transaction destination country, assign… the transaction origination country to a first country category, assign… the transaction destination country to a second country category, identify …a first transaction processing and data storage pathway, evaluate …the first transaction processing and data storage pathway…, determine …a first prioritization score; identify… one or more alternative transaction processing and data storage pathways…, evaluate… the one or more alternative transaction processing and data storage pathways…, determine …an alternative prioritization score…, compare… the first prioritization score…, and select …the optimum pathway for the transaction processing process and the data storage process”, above amounts to mere instructions to apply the exception using the generic computer component. When viewing the additional elements either individually or as an ordered combination, the claim as a whole does not amount to significantly more than the judicial exception because the claim does not include improvements to another technology or technical field, improvements to the function of the computer itself, and does not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. In effect, the additional limitations add the words “apply it” (or an equivalent) to the judicial exception, or mere instructions to implement an abstract idea on a computer. Mere instructions to apply an exception using the generic computer component cannot provide an inventive concept. Therefore, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. Thus, the claim is not patent eligible.
Furthermore, the additional limitations of the claim of the one or more transaction processing computer infrastructures, the one or more data storage computer infrastructures, the computer server and the optimum pathway identification module that are all recited at a high level of generality to perform the functions of “…perform… the transaction processing; perform …the data storage process; identify… an optimum pathway with regard to one or more relevant factors including: identify …the transaction origination country and the transaction destination country, assign… the transaction origination country to a first country category, assign… the transaction destination country to a second country category, identify …a first transaction processing and data storage pathway, evaluate …the first transaction processing and data storage pathway…, determine …a first prioritization score; identify… one or more alternative transaction processing and data storage pathways…, evaluate… the one or more alternative transaction processing and data storage pathways…, determine …an alternative prioritization score…, compare… the first prioritization score…, and select …the optimum pathway for the transaction processing process and the data storage process”, which do not include improvements to another technology or technical field, improvements to the function of the computer itself, and does not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. Rather, these functions are improvements in a business/financial solution of how to “facilitating an international financial transaction by evaluating, identifying multiple international pathways for transaction processing and data storage, and using an optimum pathway for these processes between the transaction origination and destination countries”. This business/financial solution is also one of the business solutions that the Applicant’s invention tried to solve as well (Please see the Applicant’s specification paragraphs 1-7 and the Applicant’s remarks on pages 13-14).
Therefore, there are no technical solutions, improvements to another technology or technical field, improvements to the function of the computer itself, and do not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment in the Applicant’s claims. Thus, the Applicant’s claims are not similar to McRO and Enfish. Automating the process in the Applicant’s claims improve the business process, not technology. Merely using a computer as a tool to implement the abstract idea that improve a business process (i.e. the abstract idea) does not equate to a technological solution. Thus, Applicant’s arguments are not persuasive.
Argument 2: Applicant argued that: “…In the present case, there are no rejections under Sections 102, 103, or 112, only under Section 101. The pending claims are clearly directed to a specific and practical improvement in the functionality of a computer system to address a real-world problem and, therefore, even if they include an abstract idea, they are patent eligible…” (Please see the remarks on page 14).
Answer 2: The Examiner respectfully disagrees.
The Office also would like to point out to the Applicant that the "novelty" (there are no rejections under Sections 102, 103, or 112) in the abstract idea does not satisfy the second prong of Step 2A and Step 2B of the Alice/Mayo Test analysis. Please see Ultramercial, Inc. v. Hulu, LLC, 112 USPQ2d 1750 (Fed. Cir. 2014).
Furthermore, the 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." See Diehr, 450 U.S. at 188-89; see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (stating that, "under the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility").
For the above reasons, it is believed that Applicant's arguments have been fully considered but they are not persuasive and the rejections should be sustained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tien C. Nguyen whose telephone number is 571-270-5108. The examiner can normally be reached on Monday-Thursday (6am-2pm EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-270-6108.
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/TIEN C NGUYEN/Primary Examiner, Art Unit 3694
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